Justia Intellectual Property Opinion Summaries

Sisvel’s 698 and 196 patents claim methods and apparatuses that rely on the exchange of frequency information in connection with cell reselection between a mobile station (or user cell phone) and a central mobile switching center. Both are entitled “Cell Reselection Signalling Method.” The 196 patent is a continuation of the application that eventually gave rise to the 698 patent.The Patent Trial and Appeal Board concluded that multiple claims in each patent are unpatentable as anticipated and/or obvious in view of certain prior art. Sisvel challenged the Board’s construction of a single claim term, “connection rejection message” and the Board’s denial of its revised motion to amend the claims of the 698 patent. The Federal Circuit affirmed, agreeing that “connection rejection message” should be given its plain and ordinary meaning of “a message that rejects a connection.” The Board correctly determined that Sisvel failed to meet its burden to show that the scope of its substitute claims is not broader than the scope of its original claims. View "Sisvel International S.A. v. Sierra Wireless, Inc.," on Justia Law

The Copyright Office sent a letter to Valancourt Books, LLC, an independent press based in Richmond, Virginia, demanding physical copies of Valancourt’s published books on the pain of fines. Valancourt protested that it could not afford to deposit physical copies and that much of what it published was in the public domain. In response, the Office narrowed the list of demanded works but continued to demand that Valancourt deposit copies of its books with the Library of Congress or otherwise face a fine. Valancourt then brought this action against the Register of Copyrights and the Attorney General. Valancourt challenged the application of Section 407’s deposit requirement against it as an unconstitutional taking of its property in violation of the Fifth Amendment and an invalid burden on its speech in violation of the First Amendment. The district court granted summary judgment to the government on both claims.   The DC Circuit reversed the district court’s grant of summary judgment in the government’s favor and remanded for the entry of judgment to Valancourt and the award of relief. The court concluded that Section 407, as applied by the Copyright Office in this case, worked an unconstitutional taking of Valancourt’s property. The court explained that the Office demanded that Valancourt relinquish property (physical copies of copyrighted books) on the pain of fines. And because the requirement to turn over copies of the works is not a condition of attaining (or retaining) copyright protection in them, the demand to forfeit property cannot be justified as the conferral of a benefit in exchange for property. View "Valancourt Books, LLC v. Merrick Garland" on Justia Law

Cellect’s challenged patents are directed to personal digital-assistant devices or phones. Each claims priority from a single application, the 255 patent. The 369 and 626 patents are continuations-in-part of the 255 patent. The 742 patent is a continuation-in-part of the 369 patent; the 621 patent is a continuation-in-part of the 626 patent. The 036 patent is a continuation of the 626 patent. Each of the challenged patents was granted Patent Term Adjustment (PTA) for Patent Office delay during prosecution (pre-AIA 35 U.S.C. 154(b)); each would have expired on the same day but for the grants of PTA. None were subject to a terminal disclaimer during prosecution; the patents have all expired.Cellect sued Samsung for infringement. Samsung requested ex parte reexaminations, asserting that the patents were unpatentable based on obviousness-type double patenting (ODP). The examiner determined that the challenged claims were obvious variants of Cellect’s prior-expiring reference patent claims, tracing back to the 036 patent, which did not receive PTA and retained an expiration date 20 years after the filing of the 255 application. The 621 patent claims were unpatentable over the 626 patent claims, which were unpatentable over the 369 patent claims. The 742 patent claims were unpatentable over the 369 claims. The 369 patent claims were unpatentable over the 036 claims, which did not receive PTA. The Board and Federal Circuit affirmed. ODP for a patent that has received PTA, regardless of whether a terminal disclaimer is required or has been filed, must be based on the expiration date of the patent after PTA has been added. View "In Re Cellect, LLC" on Justia Law

Whirlpool filed a complaint against Shenzhen Sanlida Electrical Technology Co., Ltd. and Shenzhen Avoga Technology Co., Ltd. (collectively, “Shenzhen”) asserting federal and state law claims for trademark and trade dress infringement along with a motion for a preliminary injunction to stop the sale of the allegedly infringing mixers. The district court granted the injunction. In addition to its appeal, Shenzhen sought an emergency stay pending appeal. After granting an initial administrative stay, the Fifth Circuit denied that motion. Then, after the Federal Circuit heard the merits of the case, it affirmed the district court.The Fifth Circuit found the district court did not abuse its discretion in finding that the harms weighed in favor of Whirlpool. View "Whirlpool v. Shenzhen Sanlida" on Justia Law

Volvo’s 692 patent is directed to a tractor-type stern drive for a boat. A stern drive is an engine mounted in the boat's hull, connected to a drive unit mounted outside of the hull, typically on the stern; it is also called an “inboard/outboard drive.” A tractor-type drive generally relies on forward, bow-facing propellers that pull the boat through the water. In 2015, Volvo launched its commercial embodiment of the patent, the Forward Drive, which became extremely successful for water sports, including wake-surfing. The forward-facing propellers increased the distance between the propeller and swimmers, compared with prior, pulling-type stern-drive boats. In 2020, Brunswick launched its own drive that embodies the 692 patent, the Bravo Four, and petitioned for inter partes review, asserting that all claims would have been anticipated or obvious based on several references.The Patent Trial and Appeal Board found all claims unpatentable as obvious. The Federal Circuit vacated. The Board’s finding of a motivation to combine was supported by substantial evidence but the Board failed to properly consider the evidence of objective indicia of nonobviousness. Volvo established a nexus between its objective evidence of secondary considerations and the claimed invention. Even if its assignment of weight to each factor was supported by substantial evidence (“some weight” for copying, industry praise, and commercial success; and “very little weight” for skepticism, failure of others, and long-felt unsolved need), the Board did not discuss the summation of the factors. View "Volvo Penta of the Americas, LLC v. Brunswick Corp." on Justia Law

Pace (a company that sells and services garage doors) sued a competitor, Overhead Garage Door (“OGD”) (a company that also offers garage door services), alleging a host of federal and state law violations relating to OGD’s trade practices. Pace and Overhead Door Corporation (a garage door manufacturer that is not a party to this case but that has a name noticeably similar to Defendant OGD, its competition) have a licensing agreement in which Pace is the licensee, and Overhead Door Corporation is the licensor. As part of this agreement, Pace uses Overhead Door Corporation’s marks. The district court granted summary judgment to OGD on all of Pace’s claims, concluding in large part that Pace could not bring suit because Pace was a nonexclusive licensee that lacked sufficient ownership rights in Overhead Door Corporation’s marks and because OGD and Overhead Door Corporation’s settlement agreement extinguished Pace’s claims. Pace timely appealed.   The Eleventh Circuit vacated. The court concluded that Pace may bring its federal and state law claims. The court concluded that the licensing agreement, Pace’s status as a nonexclusive licensee, and the settlement agreement do not bar Pace from bringing its claims under the Lanham Act, state law, or common law. The court explained that although the agreement may prevent OGD and Overhead Door Corporation from suing each other, the settlement agreement is “not . . . binding on . . . current and future licensees.” As such, the settlement agreement is not binding on licensees like Pace and does not prevent Pace from suing View "D.H. Pace Company, Inc. v. OGD Equipment Company, LLC" on Justia Law

Incept’s 723 and 913 patents relate to improved methods for treating cancer, particularly prostate cancer, using radiation. The patents describe methods of introducing a filler between a radiation target tissue and other tissue to increase the distance between the two and thereby decrease the amount of radiation received by the non-targeted tissue. Palette sought inter partes review challenging the claims of the patents as unpatentable over prior art, including “Wallace,” describes a method for the “rapid formation of a biocompatible gel . . . at a selected site within a patient’s body.”The Federal Circuit affirmed the Patent Trial and Appeal Board in holding that the claims were anticipated or obvious, 35 U.S.C. 102, 103. Wallace discloses each element of claim 1 of the 723 patent, arranged as in that claim. The Board’s findings of motivation to combine are supported by substantial evidence in the form of the references themselves and Palette’s expert’s detailed testimony, which the Board found “persuasive.” With respect to Incept’s argument that the Board improperly dismissed the market share data that Incept provided, the court deferred to the Board’s findings concerning the credibility of expert witnesses. View "Incept LLC v. Palette Life Sciences, Inc." on Justia Law

The defendants each licensed computer code from Live Face for $328. Live Face then sued them for copyright infringement, seeking about $483,000 in damages. Live Face has roughly 200 copyright suits pending. After more than five years, with summary judgment pending, Live Face successfully moved to dismiss its suit with prejudice. It argued that a 2021 Supreme Court case (Google) made the defendants’ fair-use defense insurmountable. The defendants sought fees; the district court denied the motion, finding that the defendants did not prevail because of their defenses but rather due to a fortuitous, unforeseen change in the law.The Seventh Circuit vacated and remanded. The Copyright Act authorizes prevailing parties to recover costs and fees, 17 U.S.C. 505. Four nonexclusive factors are relevant: the frivolousness of the suit; the losing party’s motivation for bringing or defending against a suit; the objective unreasonableness of the claims advanced by the losing party; and the need to advance considerations of compensation and deterrence. The defendants did prevail because of their defenses, including their fair-use defense. No matter which side prevailed in Google, the law would favor one of these parties. It is unclear whether Google changed anything relevant here, without a proper analysis of how Google affected Live Face’s claims. Even if Google did change something fundamental, the defendants raised defenses apart from fair use, which might have defeated Live Face’s claims. View "Live Face on Web, LLC v. Cremation Society of Illinois, Inc." on Justia Law

The Architectural Works Copyright Protection Act of 1990 (AWCPA)1 extended copyright protection to “architectural works,” defined in 17 U.S.C. Section 101 as “the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings.” The principal question raised by this appeal is whether First Security Bank & Trust Company (the “Bank”), which purchased an uncompleted building in a sale approved by the bankruptcy court in the property owner’s Chapter 7 liquidation proceeding, infringed the architect’s copyright in the building by completing the building without the permission of the building’s architect, Cornice & Rose (“C&R”).   The Eighth Circuit affirmed. The court agreed with the district court there was no actionable infringement because C&R’s infringement claims are precluded by the bankruptcy court’s order approving the sale. The court explained that C&R makes no showing on appeal that the district court would have reached a different result (i.e., denied summary judgment) had it been allowed to file a sur-reply. In other words, the argument is entirely procedural. Further, it ignores that sur-replies are viewed with disfavor and that a party appealing the denial of leave to file a discretionary pleading has a heavy burden to prove that the adverse procedural ruling mattered. Here, even if C&R’s contention that DSC and WWA raised new or additional arguments in the supplemental affidavit is fairly debatable. Thus, the court concluded that the denial of permission to file the requested sur-reply in a thoroughly litigated case was a textbook example of harmless error. View "Cornice & Rose International, LLC v. Four Keys" on Justia Law

Rembrandt’s 019 patent is directed to test assay devices and methods for testing biological fluids. The test assay device receives a fluid sample “introduced directly to the sample loading zone” of one or more assay test strips. Alere petitioned for inter partes review.The Patent Trial and Appeal Board found that claims 3–6 and 10 would have been unpatentable for obviousness. Rembrandt argues that the Board erred by relying on Alere’s new theories asserted for the first time in its reply brief. The Federal Circuit affirmed. Alere did not offer new theories. Alere’s reply argument was responsive to Rembrandt’s arguments and the Board’s observations. Substantial evidence supports the Board’s determinations. The Board was presented with “two alternative theories” about what the prior art discloses; the court reasoned that it was not its task “to determine which theory we find more compelling.” View "Rembrandt Diagnostics, LP v. Alere, Inc." on Justia Law